Willfulness

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Judge Chang denied defendant Artsana USA f/k/a Chicco’s summary judgment motion, except for a specific limitation on willful infringement, in this patent dispute involving infant play gyms.

First, the Court held that a jury could reasonably determine that Artsana’s connectors pivotally connected to the mat. The original design was a fold of fabric with a…

Next week, on March 15, 2017, the Federal Circuit Bar Association and the Intellectual Property Law Association of Chicago are hosting an Intellectual Property Law Symposium at the University Club of Chicago from 8:45am until 5:00pm.  Register here.  Speakers include Northern District of Illinois Judges Castillo, Feinerman, Holderman (Ret.), Kendall, and Pallmeyer; as…

LoggerHead Tools, LLC v. Sears Holding Corp., No. 12 C 9033, Slip Op. (N.D. Ill. Sep. 20, 2016) (Darrah, J.).

Judge Darrah granted in part defendant’s motion for summary judgment of noninfringement and invalidity in this IP case involving plaintiff LoggerHead’s Bionic Wrench. Of particular note, the Court held:

  • The Court denied summary judgment

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Loggerhead Tools, LLC v. Sears Holdings Corp., No. 12-CV-9033, Slip Op. (N.D. Ill. Sep. 20, 2016) (Darrah, J.).

Judge Darrah granted in part plaintiff Loggerhead’s motion to exclude defendant Apex’s expert’s opinions regarding willfulness and obviousness in this IP case involving the Bionic Wrench.

Of note, the Court held as follows:

  • The expert’s testimony

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Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Aug. 23, 2013) (St. Eve, J.).

Judge St. Eve granted defendants’ (collectively “Zurn”) Daubert motion in limine to exclude plaintiff Sloan Valve’s “corporate intellectual property practice” expert in this patent infringement case involving flush valves for use in plumbing …

Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., No. 05 C 3684, 2008 WL 839993 (N.D. Ill. Mar. 27, 2008) (Der-Yeghiayan, J.).
Judge Der-Yeghiayan denied defendants’ (collectively “Limited Brands”) motion for reconsideration regarding the Court’s claim construction opinion and its summary judgment opinions of infringement, validity and damages – click here to read more about those opinions in the Blog’s archives. The Court previously construed the claims of plaintiff Ball Aerosol’s (“BASC”) patent covers a candle tine. The Court granted BASC summary judgment of infringement and validity, pre-KSR. When KSR revised the obviousness standard, the Court sua sponte ordered supplemental briefing regarding obviousness in light of KSR. Based upon that briefing, the Court again granted summary judgment of validity. The Court then granted BASC summary judgment on damages awarding it 20% royalties and finding Limited Brand’s infringement willful.
The Court held that its original claim construction, validity and infringement holdings were correct and that Limited Brands had been given ample opportunities to defend itself. The Court also denied Limited Brands’ argument that reasonable royalties could not be decided on summary judgment. Limited Brands’ Seventh Amendment right to a jury trial regarding damages had not been violated. There is no right to a jury without a material question of fact.
The Court also held that while its initial grant of summary judgment of willfulness was made before the Federal Circuits’ decision In Re Seagate, the undisputed facts also warranted summary judgment of willfulness pursuant to Seagate’s objective recklessness standard. Limited Brands was aware of BASC’s patent both before the suit was filed and before it began making the infringing candle tin. In fact, Limited Brands had extensive discussions with BASC regarding BASC’s specifications for candle tins. Furthermore, Limited Brand’s main defense – advice of counsel – was negated because Limited Brands did not disclose its opinion by the Court’s deadline for doing so.
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Continue Reading Pre-KSR & Pre-Seagate Decisions Upheld Pursuant to New Law

Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, 2008 WL 169029 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.).*
Judge Cox granted in part a motion to compel discovery regarding defendant’s advice of counsel defense. The Court ordered defendants to product a technical witness that provided opinion counsel information because opinion counsel was unable to remember the substance of conversations between the two.
The Court also ordered production of communications between opinion counsel and trial counsel related to the patent in suit. These communications were within the scope of defendant’s waiver, even though a deposition of trial counsel would not have been allowed.
The Court did not allow plaintiff to take any additional fact depositions. Plaintiff argued it had waited to take certain fact depositions because the witnesses were expected to be Fed. R. Civ. P. 30(b)(6) designers regarding defendants’ willfulness defense. But the Court did not allow the deposition because fact discovery was closed and because plaintiff had deposed other witnesses on the same topics.
The most exciting part of this opinion, however, was its form, not its substance – Judge Cox used footnotes for cites. While this format is infinitely more readable and has many prominent advocates – Brian Garner, Ken Adams, me (perhaps not the most prominent but I am an advocate of footnote citation) – it is a bold move in the typically conservative realm of judicial writing. At least one other Northern District Judge, Chief Judge Holderman, has used footnote citation. If you are aware of other examples, let me know.
Thank you Judge Cox.
* Click here for more on this case and related cases in the Blog’s archives.
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Continue Reading Opinion Letter Discovery and Footnote Citation

Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2007 WL 4287503 (N.D. Ill. Dec. 4, 2007) (Coar, J.).*
Judge Coar granted defendant Sandoz’s Fed. R. Civ. P. 12(b)(6) motion to dismiss or in the alternative Fed. R. Civ. P. 12(c) motion for judgment on the pleadings, dismissing plaintiff Abbott’s willfulness claims Abbott alleged that Sandoz willfully infringed Abbott’s patent related to an extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL). At the time Sandoz entered the market with its generic version of Biaxin XL, the Federal Circuit had issued an opinion based upon an interlocutory appeal of a temporary restraining order, which included statements that Abbott’s patent was susceptible to invalidity and unenforceability argument. The Court held that Sandoz’s reliance on that opinion, regardless of the limited record it was based upon or its non-final nature was objectively reasonable, well above the In re Seagate objective recklessness standard.
* Click here for more on this case and related cases.
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Continue Reading Reliance Upon Fed. Cir.’s Cursory Potential Invalidity Statements Avoids Willfulness